The Complainant is C & J Clark International Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is wangsu qing, China. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 12, 2019.
On August 10, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 10, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2019.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 24, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is C & J Clark International Limited (“Clarks”), a British-based international shoe manufacturer and retailer founded in 1825 by brother Cyrus and James Clark. The Complainant has gained a reputation as one of the most influential and fashion-forward shoe manufacturers since the early 1950s, with fame earned for creating the Desert Boot, Wallable, Desert Trek and more. The Complainant has been credited for influencing subcultures across the world from “rude boys” in Jamaica; Beatnik Culture in the United States of America; Mods in the 60s, 70s and 80s, and the Britpop movement in the 90s. The Complainant has also become the fourth largest footwear company in the world, with over 1,500 branded stores and franchises across the world, including stores and employees in the Americas, United Kingdom (“UK”), Europe and Asia Pacific.
The Complainant has acquired widespread consumer goodwill by virtue of its 194 years in operation using the CLARKS trademark. To date, the Complainant holds several registered trademarks for the term “clarks” and related logos, which are exhibited below:
Trademark
Reg. No.
Classes
Filing Date
Jurisdiction
000167916
18, 25, 26
April 1, 1996
European Union
CLARKS
000167940
18, 25, 26
April 1, 1996
European Union
CLARKS
001694793
35, 37, 40
June 8, 2000
European Union
003909744
9, 14, 35
July 1, 2004
European Union
004256681
16, 17, 25
January 25, 2005
European Union
004625844
16, 18, 25
September 8, 2005
European Union
004656518
9, 28
October 17, 2005
European Union
008133175
3, 21
March 3, 2009
European Union
009198748
26, 37, 40
June 24, 2010
European Union
The Complainant uses its marks in connection with the design, manufacture, and distribution of quality footwear products and fashion accessories, which includes bags, purses and umbrellas. The Complainant also uses the marks in advertising campaigns, investing a considerable amount in the marketing and advertising of their products. This is illustrated through the Complainant’s “Back To School” television promotions, and more recently through the use of social media marketing with hashtags such as, “#ClarksForLife” and the marketing campaign “Comfort In Your Soul”.
As part of the Complainant’s business strategy, the Complainant and its subsidiaries have already registered many domain names which either consist solely of or contain its CLARKS trademarks. The Complainant utilizes the individual domain names to provide its customers with information specific to their location. A selection of the domains has been listed below:
Domain Name
Registration Date
September 1999
N/A
December 2012
N/A
June 2016
July 2001
July 1999
August 1996
The Complainant asserts that they have significant goodwill and reputation in the name “Clarks” and that the name is an indication of the source of goods and services supplied in trade and commerce. As a result of the Complainant’s extensive and prolonged use, the “Clarks” name has become distinctive and identifies the Complainant’s business as the source of products sold under the “Clarks” brand. The Complainant’s CLARKS trademarks are widely recognized by the public.
The disputed domain name was registered on June 18, 2017. As of the date of this decision, the disputed domain name resolves to a website bearing the “Burris brand” and offering a number of Clarks products for sale.
The disputed domain name was registered on July 10, 2017. As of the date of this decision, the disputed domain name resolves to a website assembled using WordPress and containing links to what appear to be competitors to Clarks. A large number of these links do not currently resolve to websites.
The disputed domain name was registered on September 30, 2018. As of the date of this decision, the disputed domain name does not resolve to an active website. However, according to the evidence provided by the Complainant, the disputed domain name resolved to a website displaying the Complainant’s trademark on what seemed to be pictures of the Complainant’s products on sales.
The disputed domain name was registered on December 22, 2016. As of the date of this decision, the disputed domain name does not resolve to an active website. However, according to the evidence provided by the Complainant, the disputed domain name resolved to the same website as the disputed domain name . 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s CLARKS trademark. The disputed domain names incorporate the CLARKS trademark in their entirety with the addition of terms “cheap”, “shoes”, “outlet”, “clearance” and the geographical indicator “USA.” The Complainant submits that the addition of these terms is likely to add more confusion, in particular to the minds of the Complainant’s customer base and to Internet users in general. In previous decisions such as TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, the panel discussed the use of a term that had a close association with the Complainant’s class of goods. The panel held; “The inclusion of this generic term does not negate the confusing similarity of the Domain Name to Complainant’s AUTO TRADER mark. On the Contrary, the addition of the word “transactions” to the Domain Name increases the confusing similarity, as Complainant’s mark is used in connection with advertising for automobile sales transactions.”
The Complainant further submits that, to the best of their knowledge, the Respondent has not registered any trademarks for the term “Clarks”. Neither can the Complainant conceive of any plausible explanation as to why the Respondent would have a legitimate interest in domain names that are clearly associated with the Complainant. Paragraph 4(c) of the Policy outlines some circumstances where a respondent can demonstrate a right and/or legitimate interest in a domain name. The Complainant submits that none of these circumstances apply in this case, especially as that the Respondent has never been licensed or authorized in any way to use the distinctive CLARKS trademarks. Moreover, the Respondent has never been affiliated with the Complainant in any way whatsoever and could not make any legitimate use of the disputed domain names given the Complainant’s prior use, reputation and goodwill associated with the “Clarks” name.
Lastly, the Complainant submits that the Respondent both registered and is using the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy, and the Complainant further submits that there is no plausible good faith use that can be conceived by the Respondent in registering the disputed domain names. The Complainant has prior trademark rights to the “Clarks” terms which predate the creation of the disputed domain names by at least 20 years. Anyone who has access to the Internet will be able to find the Complainant’s trademarks on public trademark databases. The Complainant further submits that substantial goodwill and recognition has been attained over the 194 years of them using the “Clarks” name, which has become well-known amongst consumers. As mentioned previously, the Complainant enjoys a worldwide reputation and strong market identity. The Complainant is a leading retail shoe specialist, and the Complainant’s “Clarks” brand is also the number one shoe brand in the UK, the largest smart shoe company, and the fourth-largest footwear company on the planet. “Clarks” branded products are sold in over 160 countries worldwide with global revenue of GBP 1.5 billion in 2018. Given the Complainant’s strong and established position within the European and International markets, it is inconceivable that the Respondent would have been unaware of the Complainant and the renown of its “Clarks” brand at the time of registration.
Moreover, the Respondent’s use of the disputed domain names demonstrates a clear intent to target and to capitalize on the goodwill associated with the Complainant. The registration of multiple domain names utilizing the Complainant’s marks, with the addition of descriptive words such as “clearance”, “sales”, “cheap”, “shoes” and the geographical indicator “USA”, further adds to the presumption of bad faith against the Respondent. In addition, some of the disputed domain names were found to have used the CLARKS logo trademark in the same color and typography found on the Complainant’s official website. The Complainant alleges that the Respondent has engaged in such conduct to exploit the confusing similarity between the disputed domain names and the Complainant’s trademarks for commercial gain, citing Intellectual Property Holdings AS v. Sunny Nathan,WIPO Case No. D2012-1199 as precedent.
The Complainant additionally alleges that the Respondent’s registration of four domain names which correspond to the Complainant’s trademark constitutes a typical pattern of cybersquatting in bad faith, and adds that the Respondent’s failure to respond to the Complainant’s cease and desist letter seeking transfer of the disputed domain names sent on February 19, 2019 further demonstrates bad faith.
In view of the foregoing and the Respondent’s lack of any intention to use the disputed domain names in furtherance of a legitimate business operation or other genuine endeavors, the Complainant respectfully requests the Panel to issue a decision in its favor and that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of proceedings
The Registrar has confirmed that the language of the registration agreement for the disputed domain names is Chinese. The Complainant has requested that English be the language of the proceedings considering that all the disputed domain names include English words such as, “shoes”, “cheap” “clearance”, and “outlet”, and that the disputed domain names host content in English. The Respondent did not comment on the language of the proceedings. In view of the above, the Panel concludes that English shall be the language of the proceedings.
The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant has rights to the CLARKS trademark. The Complainant has established that it is the registered owner of international trademark registrations of the CLARKS trademark.
The disputed domain name consists of the term “cheap”, the CLARKS trademark, the term “shoes”, and the Top-Level Domain (“TLD”) “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther,WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer,WIPO Case No. D2002-0329. The disputed domain name consists entirely of the CLARKS trademark, except for the terms “cheap” and “shoes”, which each serve as a prefix and suffix (respectively) related to the Complainant’s business. The addition of the terms “cheap” and “shoes” does not prevent a finding of confusing similarity between the disputed domain name and the CLARKS trademark. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel,WIPO Case No. D2015‑0210. The CLARKS trademark remains the dominant part of the disputed domain name.
The disputed domain name consists of the CLARKS trademark, the term “shoes”, and the TLD “.cc”. As a technical part of the domain name, the “.cc” TLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The disputed domain name consists entirely of the CLARKS trademark, except for the term “shoes”, which serves as a suffix related to the Complainant’s business. The addition of the term “shoes” does not prevent a finding of confusing similarity between the disputed domain name and the CLARKS trademark. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, supra. The CLARKS trademark remains the dominant part of the disputed domain name.
The disputed domain name consists of the CLARKS trademark, the terms “shoes”, “outlet”, and “clearance”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The disputed domain name consists entirely of the CLARKS trademark, except for the terms “shoes”, “outlet”, and “clearance”, which each serve as a suffix related to the Complainant’s business. The addition of the terms “shoes”, “outlet”, and “clearance” does not prevent a finding of confusing similarity between the disputed domain name and the CLARKS trademark to avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, supra. The CLARKS trademark remains the dominant part of the disputed domain name.
The disputed domain name consists of the CLARKS trademark, the descriptive terms “shoes” and “outlet”, the geographical indicator “usa”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The disputed domain name consists entirely of the CLARKS trademark, except for the terms “shoes” and “outlet”, which each serve as a descriptive suffix related to the Complainant’s business, and the term “usa”, which is a geographical indicator related to one of the Complainant’s business markets. The addition of the terms “shoes”, “outlet”, and “usa” does not distinguish the disputed domain name from the CLARKS trademark to avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, supra. The CLARKS trademark remains the dominant part of the disputed domain name.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
As noted above, the Complainant has provided evidence of its prior rights in the CLARKS trademark. These rights precede the creation of the disputed domain names.
The disputed domain names , , , and incorporate the Complainant’s trademark in its entirety. There is no evidence indicating that the Respondent is licensed to use the Complainant’s CLARKS trademark, that the Respondent is associated or affiliated with the Complainant, or that the Respondent has any other rights or legitimate interests in the strings “cheapclarksshoes”, “clarksshoes”, “clarksshoesoutletclearance”, “clarksshoesoutletusa”, or variants thereupon. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
The Complainant suggests that applying the Oki Data test further demonstrates that the Respondent has no rights or legitimate interests in the disputed domain names, but the Panel finds applying the test to be unnecessary noting the nature of the disputed domain names and the content of the website at the disputed domain names which carry a risk of association with the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent must have been aware of the Complainant’s trademarks, its business, and its “Clarks” branded products when the Respondent registered the disputed domain names. The Complainant and its CLARKS trademark are widely known throughout the world. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain names, as evidenced by the Respondent’s use of the disputed domain names to direct Internet users to websites offering “Clarks” branded products for sale. See Balenciaga v. liu zhixian, zhixian liu,WIPO Case No. D2010-1831. Moreover, the Respondent included the terms “clearance”, “outlet”, “cheap”, and “shoes” in the disputed domain names, each being a word that bears a direct connection to the Complainant’s “Clarks” branded products or the Complainant’s business, further indicating that the Respondent was well aware of the Complainant, its products and its CLARKS trademark. The Respondent’s registration and use of the disputed domain names incorporating the Complainant’s CLARKS trademark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so for the purpose of taking advantage of the Complainant’s trademark by creating a likelihood of confusion is registration and use in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009‑0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009‑0113.
In addition, the fact that some of the disputed domain names are not actively used at present does not hinder a finding of bad faith use under the Policy. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant Marks are well known, the Respondent has provided no evidence of any good faith use, and the Panel cannot conceive of any good faith use of the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , , and be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: October 8, 2019
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